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					 Drafting a Patent Application
by Patrick    D. Kelly, Texas Alpha ’74




t         HIS ARTICLE IS FOR INVENTORS who want
          to be actively involved in drafting patent applica-
          tions on their inventions. Most inventors want to
          make sure they’re still a full partner on the team
          when a patent attorney takes over and starts writ-
ing the application. Some inventors go beyond that and want
to write either or both of the following: (i) a “provisional”
patent application, as discussed below; and/or, (ii) the first
draft of a “utility” patent application.
    Regardless of whether an inventor writes a complete
first draft or hands that task over to a patent attorney, any
inventor can benefit greatly if he/she knows what to ex-
pect from a patent attorney, how the information should be
organized, what the specific goals are, and how to tell good
work from not-so-good work. The goal of this article is to         claims) within 1 year after the filing date of the provisional,
share that information with inventors, so they can work            and if the utility application states the number and claims
smoothly, quickly, and effectively with a patent attorney,         the “priority date” (i.e., the filing date) of the provisional
regardless of how the roles of inventor and attorney are           application, then the Patent Office will print that “priority
adjusted and balanced, once they begin working together.           claim” in the final issued U.S. patent, after the utility ap-
                                                                   plication has been examined and allowed.
PROVISIONAL VS. UTILILTY                                               Therefore, a provisional application gives an inventor a
APPLICATIONS                                                       potentially important level of protection, when he/she be-
In 1995, Congress created a brand new type of “provisional”        gins discussing his/her invention with potential investors,
patent application, which had never before existed in the          manufacturers, or other people or companies. No matter
U.S. (the closest equivalents were so-called “petty patents”       what the “listener” might do next, he/she cannot file a new
in Germany and certain other countries, with easier legal          patent application and get a “back-dated” filing date from
standards and shorter patent terms). Congress was tired            the Patent Office.
of inventors, companies, and courts arguing over documents             By this point, it should be clear that an inventor should
that were created by the non-patent approach to patenting          write a provisional application as clearly, strongly, and
(“Write it up, have it notarized, and mail it to yourself in a     broadly as possible. If written skillfully, a provisional ap-
sealed envelope”), so it created a “halfway” approach with         plication can become: (i) a well-written summary and ex-
formal legal standing.                                             planation that can help get a company interested in an idea
    Under the new “provisional” system, an inventor can            that hasn’t yet been fully developed; (ii) a good way to le-
write up a summary of his idea in as much detail as desired,       gally notify a company that an inventor is indeed taking
with drawings, graphs, flowcharts, and even black-and-             steps to protect his/her patent rights in an idea; and (iii) a
white or color photographs. If test data is available, it can      good way to prove to a court, arbitrator, or business man-
be discussed; if not, it’s not mandatory. Claims are not even      ager that the inventor had already thought of some par-
required. Then, the inventor files that summary, with a            ticular idea before disclosing it to a company.
check for $75, and a cover sheet, which can be downloaded             If and when an inventor replaces a provisional applica-
from the Patent Office website (go to http://www.uspto.gov,        tion with an expanded application that has claims at the
then click the “forms” button, then look for PTO/SB/16; it         end, the expanded application is called a “utility” patent
will appear as an Adobe Acrobat file, which can be opened          application. That term evolved out of the need to distin-
and printed using “Acrobat Reader” software that can be            guish “normal” patents (the kind that inventors are used to
downloaded for free from www.adobe.com).                           seeing) from specialized categories such as design patents,
    The provisional application is given an official serial num-   plant patents, etc.
ber (which will begin with “60/”, such as 60/123,456) and a            The discussion which appears below under the heading
filing date by the Patent Office. It is then filed away. It is     “Standard Format For A Utility Application” is not neces-
never examined by anyone. The Patent Office simply does            sarily binding on provisional applications. Nevertheless, it
not care how good or bad it is.                                    is a time-honored and well-respected format for patents.
    Instead, its only legal effect is this: if the same inventor   So, unless an inventor has a good reason for not following
files an expanded and improved “utility” application (with         and using that same sequence of headings, it’s a good idea


                                                                           F ALL 2002      THE BENT OF TAU BETA PI            17
to go ahead and use it, in a provisional filing, with one ex-
ception: the claims.
     In a utility application, the claims are what defines the
invention; the claims define the boundaries and limits of
the exclusive and protectable property that will thereafter
belong to the inventor (or the “assignee” which owns the             Patent
patent, such as an inventor’s employer). In provisional ap-          Office.
plications, claims are not necessary. Some patent attorneys          Once an
argue that claims should always be included, even in a pro-          a p pl i ca -
visional case, in order to make it clear that the inventor           tion gets
wanted and intended to make such-and-such his property.              past       the
The author of this article would argue the opposite, and             provisional
follows the practice of never putting claims in a provisional        stage, any in-
application. Why not? Because provisionals should be writ-           ventor who tries
ten and filed quickly, without pains-taking efforts to make          to draft a “utility”
sure the prior art has been thoroughly researched and                application should al-
evaluated, the claims have been drafted carefully, etc. If           ways have it reviewed by
that’s the “modus operandi” of nimble, quick, and agile pro-         a patent attorney, before it’s filed. There are hundreds of
visional applications, and if they’re written mainly to get          complexities and hidden traps in the patent laws, especially
an early filing date, then putting a set of claims into a pro-       when it comes to drafting claims. People who have never
visional filing runs a major risk of turning it into a “sitting      studied law in general, and patent law and claims in par-
duck,” where opponents (i.e., their lawyers, who are get-            ticular, aren’t likely to be able to avoid every potential prob-
ting paid by the hour) can argue at great length (and expense)       lem without guidance from a skilled professional who knows
that the claims were invalid, overboard, or whatever. The            the ropes.
safer approach is to not even have claims that can be attacked           In addition, no matter what an inventor’s level of involve-
and criticized; instead, focus any extra time and effort that        ment will turn out to be, any inventor should be fully aware
might be available on making sure the technical summary is           of the “prior art” which relates to his/her invention. With
as good, reliable, and convincing as possible.                       the explosion of information that is freely available on the
     Rephrased in the vernacular, don’t try to climb up on a         Internet, any inventor can do an initial patent search, down-
horse unless you’re ready to ride it. You don’t know what            load the relevant patents in printable form, and study those
that horse is going to do after you’re on it; if it suddenly bolts   patents, so that when it’s time to talk with the patent at-
and takes off, it’s not going to stop just because you ask it to.    torney, the initial search will already be finished at the low-
So, instead of claiming to the world that you’re a skilled rider     est possible cost, and the patent attorney can begin build-
before you’re even up on that horse, approach it with respect,       ing on top of that foundation, rather than starting from
and a bit of caution and humility. If it’s a decent horse at all,    “ground zero.”
it’ll be bigger than you, and stronger than you.
     In the same way, the tone and content of a provisional          GENERAL COMMENT
application should be, “I think this might be a good idea.           Patents are written for four entirely different types of read-
I’ve been working in this field for a while, and from what           ers: (1) scientists, engineers, and other technical special-
I’ve seen so far, no one else seems to be doing it.” No one          ists; (2) patent examiners, who have degrees in science or
will try to rip your head off for making a statement like            engineering but who may not have much expertise in the
that. Indeed, if you’re “the little guy,” trying to do some-         specific field you’re working in; (3) judges, who usually have
thing worthwhile and help other people, they’ll probably             no training in science or technology except a couple of fresh-
start rooting for you.                                               man science courses in college many years ago; and (4)
     But, if you walk into the office of an experienced man-         patent attorneys who work for companies that might be
ager (or patent attorney) and start saying, “I’ve thought of         interested in licensing or buying the patent. The best way
a super-colossal idea, and it’s going to make millions, and it       to reach all four groups is to be clear, methodical, and
belongs to me,” I can promise you—he’s heard it before,              straightforward. Avoid legalistic phrases such as, ‘the here-
several times, from people who never succeeded at any-               inbefore mentioned component.’ Plain, clear English is best,
thing (except for wasting other people’s time). His eyes will        and before you describe the invention, give special care to
glaze over, and he’s not going to give you as much respect           the “Background” section discussed below.
as you’d like.
     So, don’t start out by making claims; don’t give the world      PRIOR ART
the impression that you think you’ve got the right to de-            “Prior art” is a legal term that refers to information that is
cide what belongs to you. Instead, roll up your sleeves, start       publicly available (usually but not always in printed form)
working on the problem, and try to convince any onlookers            on the date you file your application. It includes patents,
that you’re more concerned with making a useful contribu-            articles from journals and magazines, chapters from text-
tion than in how much money you’re going to make.                    books or encyclopedias, etc. It also includes catalogs, sales
     If an inventor understands the goals of a provisional           brochures and specifications, ads, technical and field litera-
application, he/she may be fully capable of drafting, and even       ture such as instruction manuals issued by a manufacturer,
filing, an adequate provisional application with little or no        etc, so long as the publications are reasonably available to
help from a patent attorney. For more information on                 interested people.
provisionals, go to www.uspto.gov/web/offices/pac/                      Prior art is not limited to publications printed in
provapp.htm, and download the brochure issued by the                 America, or to publications printed in English. For example,

18 F ALL 2002         T H E B E N T O F TA U B E TA P I
if a translated abstract or a footnote refers to a foreign ar-         If you obtain a relevant patent, it can help you find more
ticle that seems directly relevant, obtain a copy and a trans-     prior art. For example, the front page lists all items of prior
lation of that article if possible. Several libraries in America   art (patents as well as other publications) that were con-
(such as the National Library of Medicine in Bethesda, MD)         sidered while that patent was being examined. Some data-
have extensive collections of foreign journals, so it’s often      bases can also list any subsequent patents that cited a cer-
possible to obtain copies of foreign articles without much         tain patent as prior art.
expense or delay.                                                      If you have access to a database, it’s a good idea to do
    The relevant prior art includes anything that (1) re-          your own search for articles in the scientific literature, for
sembles your invention; (2) bears directly on your inven-          two reasons. First, a professional patent searcher might
tion in any way; (3) describes any major component of your         miss a relevant item during a manual search. They work
invention, even if it does not include other crucial compo-        with limited budgets and limited times, so they can never
nents; or (4) describes how other people tried to solve the        be sure they’ve found everything. And second, many pro-
same problem you’re trying to solve. Bring anything which          fessional patent searchers do not search any databases ex-
might be relevant to the attention of the patent attorney. He      cept patents. Many of them don’t use computerized data-
(or she) can help you decide what should be brought to the         bases, and they don’t consult sources such as Chemical Ab-
attention of a patent examiner, and what can be omitted.           stracts. If you’re paying to have a patentability search done,
    Get three clean copies of the most relevant                                   ask the searcher to list the databases that were
prior art. One copy is for your own “patent                                                searched.
file.” Keep it separate from your other                                                         If an inventor is seriously inter-
files, so you can find articles quickly,                                                    ested in doing as much prior art
without having to hunt for them. Typi-                                                      searching as possible before getting
cal billing rates for a good patent at-                                                      a patent attorney involved, he/she
torney are about $200/hour, so you don’t                                                      should also find out what kinds of da-
want to keep one waiting on the phone                                                         tabases or libraries are available in
for 15 minutes while you try to find an                                                       that field of science or technology.
article buried in some pile somewhere.                                                        As just one example, anyone who
The second copy is for the attorney’s                                                         works professionally with biochem-
files. The third copy will be submitted                                                       istry or medicine should know about
with the application.                                                                        both (i) the National Library of
    Patent searching is a complex task, but                                                  Medicine, in Bethesda, Maryland,
an inventor who makes a diligent effort                                                      which is paid for by government
at it can often come up with one or more                                                     funds and which makes its online da-
items that will offer a good start. A great                                                  tabase available for free, at http://
place to start is the free (for users) U.S.                                                  igm.nlm.nih.gov; and, (ii) specially
patent database run by IBM, available at                                                    developed searching software such
www.delphion.com. Once you get into the                                                     as “Grateful Med,” which makes it far
main site, you can use various buttons to do                                                easier and more reliable for even a
a “Boolean” search, which is a weird word                                                   novice to get good and reliable re-
that means, in essence, that you can search                                                 sults, using a well-developed and
by fields (such as by inventor’s names, by as-                                           highly sophisticated set of “MESH”
signee names in case a certain patent is                                              (medical subject heading) terms that are
owned by a company you’re interested in, and by                                  assigned to articles by a corps of technician-
key words anywhere in title, abstract, or text). A Boolean         specialists at the NLM. That is just one example of an ex-
search also lets you use “connecting” words such as AND            traordinarily useful cost-saving resource in one particular
or OR to fine-tune the search. For example, if you want to         field of research; various others are available, and the ex-
search for, say, any patents on heated ice skates, a Boolean       perts in a certain field (including government employees,
search would let you search for “ice” AND “skat” (which            and librarians who work at specialized libraries in univer-
would find both “skate” and “skating”) AND (“heat” OR              sities) are the best way to identify and locate similar re-
“warm”).                                                           sources in any other field of research. Most large universi-
    Note that the Delphion database also contains informa-         ties have a chemistry library, a biology library, and an engi-
tion of various foreign patent databases (including European,      neering library, all separate, and all with at least one refer-
Japanese, Canadian, and Patent Cooperation Treaty appli-           ence specialist who works at that particular library. Such li-
cations), but those must be specified by a special command.        brarians are excellent sources of guidance on where to look
    Patents can be downloaded in their final form (with cover      for information, and they often will do a for-pay literature
pages, drawings, etc.) for $4.50 each from www.micropat.com;       search, for a local inventor, at rates which are usually signifi-
a user account must be set up, but it’s free.                      cantly less than the costs of a typical patent search.
    Patents can also be searched using the official PTO da-
tabase, which is reached through www.uspto.gov. Although           STANDARD FORMAT FOR A “UTILITY”
that database is a bit clumsier to work with when it comes         APPLICATION
to patent drawings, the complete texts of U.S. patents can         The headings listed below are standard. They can be al-
be downloaded for free from the PTO website; once down-            tered if necessary for a clearer presentation, and subhead-
loaded, those files can be opened and manipulated using any        ings may be added at will. In the early stages, it’s conve-
modern word processing software. Patents are not copy-             nient to start each major section on a new sheet of paper in
righted; they can be reproduced at no charge by anyone.            case you need to add more information to any section.

                                                                           F ALL 2002      THE BENT OF TAU BETA PI              19
    The title should be short (fewer than about eight words).       they’re being compared against. If the prior art could not
It’s a finding aid only and does not restrict the coverage of       accomplish a desirable goal, describe it. If the prior art has
the patent.                                                         shortcomings (for example, prior machines had numerous
                                                                    moving parts, which made them expensive to manufacture,
GOVERNMENT SUPPORT                                                  difficult to operate, and prone to breaking or jamming),
Omit this heading unless government funding was used.               describe those shortcomings. This sets the stage for the
Otherwise, indicate which agency provided the funds. The            usefulness of the invention.
grant number is optional.                                               And third, point out why your invention is different and
                                                                    better.
FIELD OF THE INVENTION                                                  These three paragraphs might be combined or reorga-
Unless the general field is immediately clear from the title,       nized in the final application, but setting forth each para-
list a broad field of technology (such as chemistry, pharma-        graph separately will help the inventor organize the neces-
cology, automotive, machinery, computers, electronics, sur-         sary information and convey it clearly to a patent attorney.
gery, dentistry, agriculture, pesticides, etc.) Then cite a               This advice, about creating 3 different paragraphs on
more specific field or goal, such as “More specifically, this       each item of prior art, is a very good and very cost-saving
invention relates to drugs for treating XYZ syndrome,” or           piece of advice. The problem is, most inventors think they
“This invention relates to an improved widget for shining           can do it, without actually doing it. They can—and almost
shoes.” This section is not crucial; it simply helps a docket       always do—easily tell the patent attorney everything they
clerk in the Patent Office figure out which examining group         know about each item of prior art. And that, to the inven-
(“art unit”) should receive and examine the application.            tor, works just fine. The problem is, the patent attorney
                                                                    probably won’t actually start drafting the patent applica-
BACKGROUND OF THE INVENTION                                         tion until several days or weeks later, and by then, several
This section should contain three types of information:             pieces of prior art are all schlumped together in a pile or
    1. Describe the context of the invention. Although many         file, and now the patent attorney has to sort through them,
patents provide very little background information, this is         try to remember what the inventor said about each one,
a good chance to create a good first impression. Draft a short      and either dictate or write a narrative analysis that sorts
essay describing that particular field of science, two to five      everything out.
pages long (double-spaced), so that an intelligent person               So, here is probably the single best piece of advice in
who has never studied that area of technology will be think-        this entire article for inventors who want to save time,
ing, “That’s interesting; I never knew how that worked,”            money, and aggravation when working with a patent attor-
when he or she finishes that section. Explain each impor-           ney. For each important piece of prior art, write down, us-
tant term at any length necessary to convey a clear under-          ing no more than 1 or 2 sheets of paper, the three different
standing of that term. Point out distinctions, subtleties, and      paragraphs listed above (the brief summary; the limitations
substitute terms, especially if a certain word isn’t used the       of that piece of prior art; and, why the new invention is
same way by everyone. Avoid dictionary definitions; those           better). Then, staple or paperclip that page, with your 3
were written by grammarians who had to be brief, rather             paragraphs, onto that piece of prior art. Then, give it to the
than scientists or engineers who appreciate the complexi-           patent attorney. If you’ll do that, and actually do it instead
ties of science and technology. Explain key terms not just          of just thinking about what you’d say if you did it, you’ll be
as definitions, but in terms of how each component relates          amazed at what a good patent attorney can do from that
to other components. And, in case you leave anything out,           starting point and how quickly he or she can do it. It will
give citations to a couple of standard textbooks or review          help the patent attorney draft an application better and
articles used by scientists or engineers who work in that           faster, and then, a year or two later after a Patent Office
specialty.                                                          Action arrives with an “obviousness” rejection, it will help
    This set of paragraphs can also refer to broad problems,        the patent attorney remember and figure out what hap-
such as industrial, technical, or social problems the inven-        pened, and why, a whole lot faster, which will save you even
tion can help solve.                                                more money. So don’t just think about it—do it. If you want
    2. After the introductory essay, focus on specific items        to save money, write up all 3 paragraphs for each of the
of prior art. Full citations can be inserted into the text, or if   closest items of prior art, and give those analyses to the
numerous references are cited, abbreviated citations (e.g.,         patent attorney.
“Smith 1980”) can be used if you provide a list of complete             3. Finally, list a set of goals and objectives for your in-
citations at the end of the text. Titles of articles are op-        vention. For example, “One object of this invention is to
tional.                                                             create a simple, inexpensive, and durable hyper widget with
    For each piece of prior art, provide three different pieces     fewer moving parts, and which can bounce higher than any
of information. The easiest and clearest way is to draft three      previous widget or hyper widget. Another object is to cre-
paragraphs. First, summarize the item of prior art. How             ate a hyper widget which can generate a more concentrated
does it work, what does it do, and how is it used? Point out        vacuum in a smaller space. Another object is to create a
directly relevant passages by page number (or by column             hyper widget which can be manufactured without requir-
and line number in patents).                                        ing any radioactive elements or toxic chemicals and which
    Second, describe the limitations of that item of prior art,     generates less waste during the manufacturing process.”
in factual language. Don’t say it’s obsolete, clumsy, or ab-
surd; instead, point out its limitations in clear, factual terms    SUMMARY OF THE INVENTION
as a preface to describing the superiority of your inven-           This should be a brief (one page or less) overview for some-
tion. Comparative terms such as ‘less expensive,’ ‘more con-        one who doesn’t know anything about the invention. This
venient,’ and ‘relatively high’ are fine, if it’s clear what        section (often repeated verbatim as the Abstract) will be

20 F ALL 2002         T H E B E N T O F TA U B E TA P I
                                         published by a num-       the ABC substance.
                                         ber of data services          Figure 6 is a graph showing a plateau in blood concen-
                                          after the patent is-     trations over a prolonged period after injection of the drug.
                                          sues, and it will be         “Drawings” includes line drawings, graphs, flow-charts,
                                           read by people          etc. It does not include tables. Many chemical patents do
                                            who will decide        not contain drawings; however, a flow chart describing a
                                             whether to order      sequence of steps, a plasmid map, a DNA or amino acid
                                             a copy of the en-     sequence, or any other information, can be provided as a
                                              tire patent. After   drawing if it will help explain the invention. Chemical struc-
                                              describing the       tures or formulas can be inserted directly into the text,
                                              invention itself,    unless they are very lengthy. Small strip charts and other
                                              add one or two       machine-generated data can be provided if they are prop-
                                              sente nces           erly inked to convert them into clearly reproducible
                                             indicating how it     black-and-white drawings.
                                             is used and/or            The PTO is very reluctant to print photographs in pat-
                                             why it is useful.     ents because of the printing expense. However, any good
                                                   A lot of        photographs should be shown to the attorney, and they can
                                            people will read       be submitted to an examiner in a statement that will not be
                                            the paragraph          printed as part of the patent.
                                           above and nod               Carefully consider the best way to show your invention
                                           their head and say,     visually. Many patent attorneys and examiners look at the
                                          “Yeah, yeah, I can       drawings before the text, so drawings can create the first
                                          do that,” when they      impression. For that reason, they’re worth extra effort.
                                         really can’t do it ca-    Study the drawings of several patents in the same field as
pably, because they’ve never practiced it. It is a genuine         your invention. That will give you a sense of how patent
challenge to try to summarize a complex idea in a single           drawings are arranged and what their goal is.
page of writing, and any inventor is urged to take that chal-          When you’re ready, draw up your own rough drafts.
lenge and actually do it. One of my standard practices when        Even if they aren’t high quality, they’ll help the draftsman.
I begin working with an inventor is to tell him or her, “Give      Your only goals are to make them large and clear. Try to
me a three-to five-minute overview with a summary of the           make each drawing (even drawings of sub-components) fill
whole invention. Don’t start me out by walking me down a           up at least two thirds of a sheet of paper. Paper is cheap,
street and pointing out one building after another. Instead,       and there are few things more annoying to patent attor-
show me a map of the place. Tell me where we’re starting           neys than staring at a tiny little squiggle while listening to
out, and where we’re going to. And then, once we start             an inventor point out a dozen parts that are invisible to any-
walking down those streets and seeing those buildings, I’ll        one but him. Computer-generated drawings are often help-
have a better sense of how everything fits together, and           ful, and they can sometimes be used as the formal drawings.
where it’s heading.”                                                   Drawings in patents normally use “call-out numbers”
    To me, that’s an entirely reasonable, obvious, and logi-       which are explained in the text. Inventors should avoid
cal request. And yet, at least half of all inventors will re-      those; don’t even try to assign any numbers. Instead, give
spond to that request by waving their hand in the direction        the patent attorney two copies of your hand-drawn ver-
of a map, and then ignoring it, and start me walking down          sions. On one copy (the “plain vanilla” copy), don’t put any
some street I haven’t seen before, while I have no idea            words or numbers at all; just draw the device, graph, or
where that street is heading or why I’m going in that di-          whatever, and leave the drawing as open and clean as pos-
rection. I’ll usually listen patiently for about 15 minutes,       sible so the patent attorney will be able to use it in any way
then I’ll gently but firmly interrupt the person and say,          he chooses. On the second copy, add labels (words or
“Remember how I asked for a 3-minute summary, about 15             phrases) to identify each component, or to point out spe-
minutes ago? Well, I never got it. This tour you’re giving         cific things that deserve extra attention in the drawing. Put
me is very interesting, but I don’t have any idea where it’s       any labels out around the edges of the paper, and use ar-
leading, or how these pieces all fit together. So, let’s start     rows to point out each labeled piece. Use that drawing to
over. Can you please give me about a three-minute sum-             assign any names you want to assign to any specific compo-
mary of what this invention is about, what it does, and why        nents that need to be named. The attorney will assign
it’s useful?”                                                      call-out numbers later after he gets an idea of how the final
                                                                   drawings should appear.
BRIEF DESCRIPTION OF THE DRAWINGS                                      Drawings of prior art are rarely printed in patents. How-
Typical figure legends might read:                                 ever, such drawings can help a patent attorney figure out
    Figure 1 is a plan view showing the hyper widget of this       how your invention works, so if there are any good prior
invention.                                                         art drawings, make copies and include them with your first
    Figure 2 is a side elevational cutaway view along line         draft. Clearly label them as prior art (for example, “This is
2-2 on Figure 1.                                                   the device described in patent 4,567,890 by Smith”).
    Figure 3 is a circuit diagram of a control unit for the            Even though drawings are important, in some situations
hyper widget of this invention.                                    it may be appropriate to file a patent application with “in-
    Figure 4 is an exploded view showing the components            formal” drawings. These can be drawn by an inventor or
of this invention.                                                 patent attorney using simple tools (straight-edges, tem-
    Figure 5 is a chromatograph showing the purification of        plates, etc.), or they can be drawn by computer graphics. If

                                                                           F ALL 2002     THE BENT OF TAU BETA PI            21
adequate versions can be generated, the expense of having               Similarly, it is of-
formal drawings done by a professional draftsman can be              ten possible to use
delayed until after the application has been examined and            functional language in the
allowed. If a Notice of Allowance is received, formal draw-          chemical or biological
ings can be created, and if the application isn’t allowed, that      field, such as “any
expense can be avoided entirely. In addition, if an inventor         pharmaceutically ac-
is in a big hurry to get an application filed, informal draw-        ceptable salt of this
ings can be used to eliminate a waiting period while a profes-       compound,” or “at a
sional draftsman finishes his work.                                  dosage sufficient to
                                                                     generate an immune
DETAILED DESCRIPTION                                                 response in an injected
This section contains a narrative explanation of the invention.      animal, using a suitable
    If the invention is in the mechanical or electrical field,       carrier substance. Such
the application usually will have no examples. Instead, it           carrier substances are
will have figures. This section is the place for a detailed          well known to those
narrative describing the figures.                                    skilled in the art.”
    If the invention involves chemistry or biology, the ex-
aminer will want proof that the process or compound ex-              EXAMPLES
ists and functions in the way the inventor claims. This usu-         Most chemical and biologi-
ally requires a separate section called “Examples” which             cal patents must include examples to assure a patent exam-
will specify detailed recipes and experimental results, as           iner that the molecules, mixture, cells, etc., have been cre-
described below. The “Description” section should be a nar-          ated and perform as claimed. Otherwise, people could get
rative that explains what happens during each step of the            speculative patents merely by synthesizing a compound with-
process as the compound is being made or used.                       out having to prove its utility. Such patents would discour-
    An inventor must reveal the “best mode of carrying out           age research rather than promote it.
the invention” that is known on the day the patent applica-              If examples are necessary, they should contain enough
tion is filed. The inventor cannot hide the best version and         detail and data to allow “someone with ordinary skill in the
keep it as a trade secret while using an inferior version to         art” to repeat the experiment and get successful results.
obtain a patent. This is a rigid requirement which is strictly       In general, “ordinary skill” refers to someone who can care-
enforced. If there is any hint that an inventor was playing          fully follow written instructions, rather than a creative whiz
hide-and-seek games with the best mode requirement, most             who can find a way to overcome any obstacle. The instruc-
courts will simply strike down the patent. So, be up-front           tions can be very complex and demanding, and the level of
and entirely forthcoming with the best version you know              skill required to follow it can be high; for example, in the
about on the day the application is filed.                           field of biotechnology, “ordinary skill” often refers to people
    However, improvements that are discovered after the              with PhD degrees, since nearly any biotechnology company
application is filed can be kept as trade secrets. Therefore,        will have one or more PhD’s. The key point is that “ordi-
the way to win at the best mode requirement is by filing an          nary skill” must not require a high degree of imagination
application promptly, then following up the initial discov-          or ability to overcome unforeseen obstacles or to think up
ery with more research after the application is filed.               creative additions to a set of instructions. The invention
    There is another rule that also deserves careful attention.      must be capable of being carried out without requiring “un-
Inventors and their attorneys must act with complete can-            due experimentation.”
dor and good faith in bringing all relevant information to the           Whenever a reagent, piece of equipment, or other item
attention of a patent examiner. Inventors must be very care-         is mentioned, the supplier should be listed along with the
ful about how they treat unsuccessful experiments, early             city where the supplier is located. Model numbers (for
prototypes that didn’t succeed, etc. If they try to conceal nega-    equipment or hardware), product codes or trademarks, and
tive data, the patent can be invalidated after it is issued. Bring   purity classifications or other specifications (for chemicals)
all the data to the attention of the patent attorney, and clearly    should be specified the first time that item is mentioned. If
point out the best mode. The attorney can help you find the          you use a trademark, describe what that item is in techni-
best way to present the information.                                 cal terms or by reference to some publication that describes
    In addition to pointing out the best mode, the inventor          it in detail (e.g., “This product is a granular polyacrylamide
should try to anticipate possible modifications to his inven-        with an average molecular weight of X daltons, an average
tion. Typical language: “In an alternate preferred embodi-           particle diameter of Y microns, and a charge density of Z
ment of this invention, the positions of the cardioblot and          coulombs per gram,” or “This chip is described in the ‘Mi-
framistat can be reversed. This would cause . . .”                   croprocessor Specification Handbook’ published by the
    It is also possible to use functional language in describ-       Magnarola Company, of Piston, Michigan”). If you used a
ing and claiming an invention. For example, suppose that             special cell or plasmid, indicate not just where it is de-
in a machine, it is necessary to securely mount part A on            scribed, but where it is available to the public (if it’s not
part B, but it doesn’t matter how you do it. The two parts           available, it might be necessary to deposit a culture with a
could be screwed together, bolted, welded, nailed, glued,            public depository). If you refer to a process that is described
clamped, etc. Instead of specifying ways of attaching those          elsewhere, give a citation to the article or book where it is
parts, you can simply refer to “means for attaching part A           described, and point out any deviations from the published
to part B,” and give one or two suitable examples, such as           version. Even if the only deviation was increasing the quan-
bolts or welding.                                                    tities used, describe what actually happened.


22 F ALL 2002         T H E B E N T O F TA U B E TA P I
REFERENCES                                                        that’s a danger sign.
If citations were given in abbreviated form (such as “Smith           Patents aren’t really scientific documents; they’re legal
1980”) in the text, the full citations (including titles of ar-   and business documents, and the essence of both law and
ticles or chapters) should be listed here, in alphabetical or-    business is conflict and competition. Patent examiners get
der. Example: Smith, W.C., et al, “A New Treatment for            paid to challenge your application and find any flaws. And
Payne Syndrome,” Science 123: 83-87 (1980).                       if your patent becomes valuable, people who want to in-
                                                                  fringe or ignore it will try even harder to find any flaws in
CLAIMS                                                            it. It’s best to find those flaws before an application is filed,
The claims of a patent define the property of the inventor.       even if it means a bit of a struggle.
Everything else is merely explanation. Anything which is              In the words of Frederick Douglass, “If there is no
described but not properly and carefully claimed becomes          struggle, there is no progress.” In the words of William
freely available for public use.                                  Shakespeare, “Life has given nothing to mankind without
    Claim drafting is a highly specialized skill, and it is not   great struggle.” The goal is not to avoid conflict; the goal is
recommended that inventors try to draft their own claims.         learning to work with conflict and competition, and learn-
However, inventors should understand some basic facts             ing to turn them to your advantage. The struggle to create
about patent claims, so they can tell whether their attor-        something important and valuable is the finest, most re-
ney is working hard and fighting for their best interests, or     warding, and potentially most enjoyable part of any career.
taking an easy way out and settling for claims that are too       But it can be difficult. The era is long dead when an ex-
narrow to offer any real protection against infringers.           plorer could claim a huge tract of land merely by erecting a
    There are two basic rules:                                    flag somewhere. Today, if you want to be recognized as the
    1. Every “limitation” in a claim must be in-fringed for       creator of something, you’ll have to work for it.
that claim to be infringed.                                           Most inventors enjoy challenges, and trying to get a good
    2. If any claim in a patent is infringed, then that entire    patent can be a real challenge, in every sense of the word. I
patent is infringed. The patent owner does not need to show       hope this article can help and that you’ll enjoy being an in-
infringement of more than one claim.                              ventor as much as I enjoy working with inventors.
    The first rule acts as a major warning for inventors. In
the broadest claims, do not include any limitations that are        Patrick D. Kelly , received an engineering sciences
not absolutely essential. Every limitation in any indepen-          degree from the University of Texas at Austin in 1974
dent claim should have a clear reason for being in that claim,      and a juris doctor from Harvard Law School in 1980.
and the only two reasons for including a limitation in an           He has practiced patent law since 1980 and special-
independent claim are (1) to define and describe the inven-         izes in biochemistry and medical technology.
tion, or (2) to avoid prior art.                                       Mr. Kelly worked for the EXXON Company in
    For example, suppose you invent a machine with seven
                                                                    1974-77 and the Monsanto Company in 1982-85. He
essential parts (A through G), and an optional part H,
which helps it work better. Your broadest claim (which              has written a guide to trademarks and trademark law
will be an independent claim that stands alone and does             which was published in the Spring and Summer 1998
not refer to any other claim) should specify only parts A           issues of THE BENT. In 1994, he was a nominee for
through G. It will also need to specify the relationship be-        the U.S. Congress. He can be reached at patenter
tween those parts; it must describe how the machine is              @aol.com.
constructed and/or how it functions; you cannot claim a
machine merely by listing its parts.
    After you have listed essential parts A through G in an       Addendum: Patent Article Updates—Winter 2003
independent claim, part H should be specified in a depen-         • My article on drafting patents (Fall 2002 BENT) was
dent claim, which will be written in a form such as, “The         written some time ago, and several items should have
machine of Claim 1, which also contains part H.”                  been updated, including:
    Why is it done this way? Well, if your broadest claim            1. U.S. patent fees change every year on October 1 and
lists all eight components (A through H), then competitors        are posted at www.uspto.gov, along with official forms. The
can “avoid” that claim (they can make, use, and sell that         fee for filing a provisional application is now $80, not $75.
invention without paying royalties) by getting rid of part           2. Patent titles can be longer now; instead of contain-
H, or replacing it with some other item.                          ing up to 10 words, they now can contain up to 500 letters
    After the patent attorney has drafted the claims, study       or digits. However, the rules state that they should be
every word carefully. See if any words can be taken out while     kept short and concise.
still distinguishing your invention from the prior art. And,         3. Delphion no longer allows free searches by non-
because of rule 2, try to draft several independent claims from   paying subscribers. Free sites for searching patents by
several different angles, using different phrases. One of those   number, inventor, assignee, and keyword, include
claims might cover it in a way that other claims missed.          www.uspto.gov (U.S. patents), ep.espacenet.com (Euro-
    While you’re working with a patent attorney, don’t be         pean and Japanese patents), and pctgazette.wipo.int
afraid to question, challenge, and probe. It’s your child, and    (Patent Cooperation Treaty patents). If you know a
you’re paying the bills. A good attorney won’t get upset,         patent number, www.delphion.com can provide pdf files
any more than you should get upset at him if he challenges        with drawings for $3/patent, and www.uspto.gov can
you to back up your assertions. In a good relationship, each      provide text files for free.
side works hard while challenging the other side to do the           4. The Grateful Med literature search software has
same. If an attorney can’t or won’t clearly explain why he        been replaced by Pub Med and Entrez Med, which can be
did something, or why he used a certain phrase in a claim,        found at www.nlm.nih.gov.

                                                                          F ALL 2002      THE BENT OF TAU BETA PI              23

				
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